Filed on behalf of Patent Owner by:
`
`Gerald B. Hrycyszyn, Reg. No. 50,474
`
`Richard F. Giunta, Reg. No. 36,149
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`Jason W. Balich, Reg. No. 67,110
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`WOLF, GREENFIELD & SACKS, P.C.
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`600 Atlantic Avenue
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`Boston, MA 02210
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`(617) 646-8000 Phone
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`(617) 646-8646 Fax
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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICROSOFT CORPORATION,
`HP INC., DELL INC., DELL TECHNOLOGIES INC.,
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`Petitioners,
`
`v.
`
`LITL LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2024-00457
`Patent No. 9,880,715
`_____________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`
`
`
`Gerald B. Hrycyszyn, Reg. No. 50,474
`
`Richard F. Giunta, Reg. No. 36,149
`
`Jason W. Balich, Reg. No. 67,110
`
`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
`
`Boston, MA 02210
`
`(617) 646-8000 Phone
`
`(617) 646-8646 Fax
`
`Paper No. __
`
`
`
`
`
`
`
`
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICROSOFT CORPORATION,
`HP INC., DELL INC., DELL TECHNOLOGIES INC.,
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`Petitioners,
`
`v.
`
`LITL LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2024-00457
`Patent No. 9,880,715
`_____________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`
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`
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................. 1
`I.
`II. ADVANCED BIONICS STEP 1 IS MET ........................................................... 2
`A. No Material Difference Between Pröll and Lane ........................................ 2
`B. No Material Difference Between Martinez/Preppernau and Pogue ............ 4
`C. No Material Difference Between Petitioners’ Arguments and Those
`That the Office Previously Considered and Rejected ................................. 5
`D. Conclusion: Advanced Bionics Step 1 Is Met ............................................. 7
`III. ADVANCED BIONICS STEP 2 IS MET ........................................................... 7
`A. BD Factor (c) Favors Denial: the ’715 EPR Examiner Evaluated a
`Combination Including Lane and Pogue ..................................................... 7
`B. BD Factor (e) Favors Denial: Petitioners Identify No Error ....................... 8
`C. BD Factor (f) Favors Denial: Petitioners Fail to Identify Any New
`Evidence that is Materially Different ........................................................ 10
`IV. CONCLUSION ................................................................................................ 10
`
`
`
`i
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`TABLE OF AUTHORITIES1
`
`Cases
`Advanced Bionics v. Med-El Elektromedizinische Gerärte,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) ................................... 2, 5, 7, 10
`Autel Intelligent Tech. v. Orange Elec.,
`IPR2021-01545, Paper 8 (PTAB Apr. 8, 2022) ...............................................2, 3
`Ecofasten Solar v. Unirac,
`IPR2021-01379, Paper 11 (PTAB Feb. 8, 2022) ......................................... 1, 2, 3
`Gator Bio v. Sartorious,
`IPR2023-00215, Paper 19 (PTAB June 20, 2023) ............................................... 9
`Google v. Valtrus,
`IPR2022-01197, Paper 18 (PTAB June 13, 2023) ............................................... 9
`Regeneron Pharmaceuticals v. Kymab,
`IPR2019-01577, Paper 9 (PTAB April 1, 2020) ................................................ 10
`Roku v. Universal Electronics,
`IPR2019-01619, Paper 11 (PTAB April 2, 2020) ................................................ 9
`Statutes
`35 U.S.C. § 325(d) ........................................................................................... passim
`Other Authorities
`MPEP § 2256 ............................................................................................................. 8
`
`
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`
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`1 All emphasis is added unless otherwise indicated.
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`ii
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`I.
`
`INTRODUCTION
`Petitioners ask the Board to devote its limited resources to conducting a trial
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`that would involve the Office’s fourth evaluation of the patentability of the ’715
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`Patent claims following (1) original prosecution, (2) Lenovo’s IPR2021-00786,
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`and (3) Reexamination No. 90/014,958 (“’715 EPR”). Petitioners do not dispute
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`that all three prior considerations are relevant under 35 USC § 325(d). Paper 11
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`(“POPR”), 17. Petitioners also do not dispute that Petitioners bear the burden to
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`establish either that their art and arguments were not substantially the same as
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`those the Office previously considered or that the Office materially erred. Id.;
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`Ecofasten Solar v. Unirac, IPR2021-01379, Paper 11, 38-42 (PTAB Feb. 8, 2022)
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`(“Ecofasten”). The Petition’s § 325(d) argument ignored the ’715 EPR entirely.
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`Petitioners’ Preliminary Reply (Paper 15, “Reply”) belatedly addresses the
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`§ 325(d) implications of the ’715 EPR. But the Reply fails to refute that the
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`Petition’s grounds and a ground considered during the ’715 EPR are both based on
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`(1) a reference (Lane or Pröll) that teaches a configurable computer but nothing
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`about a plurality of views, (2) a reference (Pogue, Martinez or Preppernau) that
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`teaches only user-selectable views, and (3) an argument that the combination of
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`these references somehow renders obvious claims that require selecting a view in
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`response to a detected computer configuration. POPR, 30-31. The Office already
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`rejected this hindsight assertion. POPR, 19-20. Petitioners ask the Board to
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`1
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`
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`conduct a trial in the hopes that the Board will reach a different conclusion. But
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`Petitioners fail to carry their burden to avoid discretionary denial under § 325(d).
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`II. ADVANCED BIONICS STEP 1 IS MET
`“Even though Patent Owner did not have the burden of proof on this issue”
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`(Ecofasten, Paper 11, 39), LiTL provided comprehensive argument, supported by
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`evidence, establishing that Petitioners’ art and arguments are substantially the same
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`as art and arguments considered by the Office during the ’715 EPR before
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`confirming the claims. PPOR, 17-31. Petitioners bear the burden to establish that
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`their art and arguments are materially different from what the Office considered
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`during the ’715 EPR. Autel Intelligent Tech. v. Orange Elec., IPR2021-01545,
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`Paper 8, 23 (PTAB Apr. 8, 2022) (denying institution; “Petitioner does not show
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`any material difference between Nihei and the references cited in the Third
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`Reexamination”); Ecofasten, Paper 11, 38-42. Because the Reply fails to identify
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`any material differences, Advanced Bionics Step 1 is met.
`
`A. No Material Difference Between Pröll and Lane
`Petitioners do not dispute that Pröll and Lane both disclose laptops with a
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`plurality of physical configurations and a sensor to keep displayed content right-
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`way-up. PPOR, 20-22. The Reply alleges that LiTL ignored “key” and “important
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`differences” between Pröll and Lane but identifies only a single difference and
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`fails to explain why that difference is material under § 325(d). Reply, 5-6. It is not.
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`2
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`
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`The difference Petitioners identify is that “Pröll’s switch/sensor … detect[s]”
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`the relative position between the computer’s modules while Lane’s sensor does
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`not. Id., 6 (citing the institution denial in IPR2024-00480 because Lane’s sensor
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`information does not indicate relative orientation between the computer’s
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`modules). But the ’715 EPR examiner did not reject the Lane and Pogue-based
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`ground because of purported deficiencies in Lane’s sensor. The Examiner rejected
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`that ground because “Pogue’s selection of views is based on a user selection and
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`not a computer’s configuration” and Lane did not “cure the deficiencies” because
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`“Lane … [lacks] explicit teaching of organizing visual representations of content
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`differently.” EX1005, 1680-1681. Petitioners’ grounds fail for the same reason –
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`none of its references teach selecting a view based on the computer’s configuration
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`as claimed. POPR, 42-77. The difference Petitioners identify between Lane and
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`Pröll is immaterial because Petitioners never dispute that Pröll – like Lane – is “not
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`explicit about the organization of content on its GUI” (POPR, 20 (quoting Petition,
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`27)) nor that “Pröll’s switch does not select a ‘view’ as claimed.” POPR, 36.
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`Petitioners fail to show that their identified sensor difference is material to
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`the reason the Office rejected the Lane and Pogue-based ground. Thus, identifying
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`this difference fails to carry Petitioners’ burden to demonstrate that their prior art
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`and arguments are not substantially the same as what the Office rejected during the
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`’715 EPR. Autel, IPR2021-01545, Paper 8, 23; Ecofasten, Paper 11, 39.
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`3
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`
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`B. No Material Difference Between Martinez/Preppernau and Pogue
`LiTL demonstrated that Pogue, Martinez and Preppernau all disclose a
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`plurality of views and that a view is selected by a user – not based on the
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`computer’s configuration as claimed. POPR, 22-31. Petitioners allege that LiTL’s
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`“comparison of Pogue with Martinez/Preppernau … fails to account for key
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`differences.” Reply, 6. But Petitioners fail to identify a single material difference.
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`Martinez: The Reply alleges that “Martinez’s display adjustment is based
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`on movement detected by a sensor.” Id. At best, Martinez discloses a different type
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`of gesture the user makes to choose between window arrangements than Pogue
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`does – shaking the computer in Martinez versus selecting an arrangement from a
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`menu in Pogue. POPR, 23. Petitioners fail to refute that this difference in how the
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`user selects is irrelevant to the patentability of the Challenged Claims that require
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`selecting a view in response to the detected current computer system configuration.
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`PPOR, 23. The Reply ignored this entirely. Petitioners cannot carry their burden to
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`identify a material difference between Martinez and Pogue by identifying a
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`difference but failing to refute LiTL’s showing that the difference is immaterial.
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`Preppernau: Petitioners allege that the POPR only compared “Pogue and
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`Preppernau’s covers.” Reply, 6. Not so. While the covers themselves show that
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`these references describe the same Windows Vista operating system, the POPR
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`went further and listed the four Windows Vista features from Preppernau that the
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`4
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`
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`Petition relies on and showed that “Pogue discloses those same features.” POPR,
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`26-27. Petitioners note that “Preppernau illustrates various window configurations
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`(e.g., the Cascade view)” but Petitioners admit that Pogue also discloses “Cascade
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`Windows.” Reply, 7; see also POPR 26-27 (identifying Pogue’s disclosure).
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`Petitioners allege that Pogue “omits [] important visualization” of cascaded
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`windows found in Preppernau because Pogue does not illustrate what cascaded
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`windows look like. Reply, 7. But Petitioners’ expert admitted that “cascading and
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`tiling are well-known graphical arrangements.” EX1003, ¶72. Petitioners fail to
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`establish that POSAs needed “visualization” to understand what cascaded windows
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`look like when their own expert admits this was “well-known.” Petitioners fail to
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`identify any material difference between Preppernau and Pogue.
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`C. No Material Difference Between Petitioners’ Arguments and
`Those That the Office Previously Considered and Rejected
`That substantially the same art was previously presented to the Office
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`suffices to satisfy Advanced Bionics Step 1 so the Board need not even consider
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`whether substantially the same arguments were made as well. 35 USC § 325(d)
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`(“substantially the same prior art or arguments previously were presented to the
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`Office”); Advanced Bionics v. Med-El Elektromedizinische Gerärte, IPR2019-
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`01469, Paper 6, 20 (PTAB Feb. 13, 2020) (precedential) (“the first condition of the
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`first part of the framework is satisfied, and we need not reach whether the ‘same or
`
`substantially the same arguments’ previously were presented to the Office”).
`
`5
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`
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`But the Office did previously consider substantially the same arguments the
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`Petition advances. PPOR, 30-31. Petitioners confusingly argue that “Lenovo did
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`not rely on a combination of Lane and Pogue … for the ‘select … in response to
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`the detected computer system configuration’ limitation,” despite admitting that the
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`Office addressed Lenovo’s “combination of Lane, Ledbetter and Pogue.” Reply,
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`8. Lenovo argued that a POSA would have run Pogue’s Windows Vista operating
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`system on Lane’s computer (EX1005, 1157; PPOR, 30) which is substantially the
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`same argument Petitioners make in arguing that a POSA would have run
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`Martinez’s and Preppernau’s operating systems on Pröll’s computer. Petition, 27-
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`29 (Martinez), 78-81 (Preppernau); POPR, 30-31 (demonstrating the similarity).
`
`Lenovo did not rely on Pogue to teach selecting a view in response to a
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`detected computer configuration because Pogue does not disclose that and only
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`teaches selecting a view in response to a user selection. But Pogue is just like
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`Petitioners’ Martinez and Preppernau references in this respect. POPR, 20. Just
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`like Petitioners do, Lenovo argued that a reference (Lane instead of Pröll) that
`
`teaches a configurable computer but nothing about a plurality of views in
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`combination with a reference (Pogue instead of Martinez or Preppernau) that
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`teaches only user-selectable views rendered the claims obvious. Id., 30-31. The
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`Office rejected that argument because no reference teaches selecting a view based
`
`on the computer’s configuration as claimed. EX1005, 1680-1681; POPR, 20. The
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`6
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`
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`Petition makes the same argument and it fails for the same reasons. PPOR, 35-37,
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`43-44, 67-68. Petitioners identify no material difference between their arguments
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`and those previously considered and rejected by the Office during the ’715 EPR.
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`D. Conclusion: Advanced Bionics Step 1 Is Met
`Petitioners fail to meet their burden to identify any material difference
`
`between their art and arguments and those the Office considered and rejected
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`during the ’715 EPR. Advanced Bionics Step 1 is thus met.
`
`III. ADVANCED BIONICS STEP 2 IS MET
`When the first prong of Advanced Bionics is satisfied, “then the Board’s
`
`decisions generally have required a showing that the office erred in evaluating the
`
`art or arguments” and “the Director generally will exercise discretion not to
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`institute inter partes review” when “the petitioner fails to make a showing of
`
`material error.” Advanced Bionics at 8-9. The Reply’s showing fails because it
`
`merely alleges that the “Office erred” but never identifies any specific error. Reply,
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`9-10. The Becton, Dickinson (“BD”) factors favor discretionary denial.
`
`A. BD Factor (c) Favors Denial: the ’715 EPR Examiner Evaluated a
`Combination Including Lane and Pogue
`BD Factor (c) evaluates “the extent to which the asserted art was evaluated
`
`during examination” (Advanced Bionics at 9 (f.n. 10)) and favors discretionary
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`denial here. Lenovo’s Ground 3 was “Lane In Combination With Ledbetter And
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`Pogue Renders Obvious Claims 1-20.” EX1005, 1151. The CRU Examiner had
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`7
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`
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`wide latitude in making rejections. See MPEP § 2256. Contrary to Petitioners’
`
`arguments (Reply, 10), the Office clearly evaluated Lenovo’s combination
`
`including Lane and Pogue when the CRU Examiner found that “Lane and
`
`Shimura” (references like Pröll that teach a configurable computer) “do not cure
`
`the deficiencies with respect to Ledbetter and Pogue” (references like Martinez
`
`and Preppernau that teach only user-selectable views) because not a single one of
`
`those prior art references teaches selecting a view in response to a detected
`
`computer configuration as claimed. EX1005, 1680-1681 (Pogue teaches selecting a
`
`view “based on a user selection and not a computer’s configuration” and Lane
`
`does “not cure [Pogue’s] deficiencies” because Lane has no “teaching of
`
`organizing visual representations of content differently”). Lenovo’s combination
`
`including Lane and Pogue was undeniably “evaluated” during the ’715 EPR.
`
`Petitioners say the Examiner did not “mention[] Lane” “until the Notice of
`
`Intent to Issue a Reexamination Certificate” but cite no authority suggesting that
`
`the timing of the Examiner’s evaluation is relevant to factor (c). Reply, 9. It is not.
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`The Notice indicates that before confirming the claims, the Examiner evaluated
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`Lenovo’s ground, including Lane and Pogue. Factor (c) favors discretionary denial.
`
`B. BD Factor (e) Favors Denial: Petitioners Identify No Error
`Petitioners say the “Examiner erred … because the Examiner did not
`
`consider a combination of Lane and Pogue for teaching the ‘select…in response
`
`8
`
`
`
`
`
`to…’ limitation.” Reply, 10. Not so. The CRU Examiner considered a combination
`
`including Lane and Pogue and found that it did not meet the “select…in response
`
`to…” limitation because no reference in the combination teaches that. EX1005,
`
`1680-1681. Petitioners’ argument amounts to “no more than a disagreement” with
`
`the CRU Examiner’s decision. Google v. Valtrus, IPR2022-01197, Paper 18, 20
`
`(PTAB June 13, 2023) (discretionarily denying institution under § 325(d)).
`
`Petitioners fail to “argue that the Office misapprehended or overlooked any
`
`specific teaching … or misconstrued a term” and fail to “point out sufficiently how
`
`the examiner erred pursuant to factor (e).” Id. (internal quotations omitted).
`
`The Board routinely denies institution when the petitioner – as Petitioners
`
`did here – fails to explain adequately how the Examiner allegedly erred in a
`
`manner material to patentability. See e.g., Roku v. Universal Electronics, IPR2019-
`
`01619, Paper 11, 19 (PTAB April 2, 2020) (discretionarily denying institution
`
`because Petitioner does not explain “adequately how the Examiner erred”); Gator
`
`Bio v. Sartorious, IPR2023-00215, Paper 19, 21 (PTAB June 20, 2023)
`
`(discretionarily denying institution where petitioner’s § 325(d) “argument is
`
`conclusory because it is unsupported by any analysis.”). Petitioners ask the Board
`
`to review extensive portions of the Petition in the hopes that the Board will reach a
`
`different conclusion than the CRU did. Reply, 10. But even “[i]f reasonable minds
`
`can disagree regarding the purported treatment of the art or arguments, it cannot be
`
`9
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`
`
`
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`said that the Office erred in a manner material to patentability. At bottom, this
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`framework reflects a commitment to defer to previous Office evaluations of the
`
`evidence of record unless material error is shown.” Advanced Bionics at 9.
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`Petitioners fail to show any material error. Factor (e) favors denying institution.
`
`C. BD Factor (f) Favors Denial: Petitioners Fail to Identify Any New
`Evidence that is Materially Different
`Petitioners identify Dr. Houh’s testimony as “additional evidence.” Reply,
`
`10. But Lenovo submitted a 286-page expert declaration in which Lenovo’s expert
`
`opined that Lenovo’s Ground 3 (Lane, Ledbetter, and Pogue) rendered obvious the
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`’715 Patent claims. EX1005, 339-393. The Office had that testimony when
`
`concluding that a combination including Lane and Pogue did not meet selecting a
`
`view in response to a detected computer configuration as claimed. Id., 1680-1681.
`
`Petitioners fail to identify any specific fact or opinion that Dr. Houh provides that
`
`Lenovo’s expert did not. Factor (f) favors institution. Regeneron Pharmaceuticals
`
`v. Kymab, IPR2019-01577, Paper 9, 18 (PTAB April 1, 2020) (denying institution
`
`under § 325(d): “the fact that an expert declaration was not before the Examiner
`
`during prosecution does not itself demonstrate that the Examiner erred”).
`
`IV. CONCLUSION
`The Board should deny institution under § 325(d) and not expend its
`
`resources evaluating the ‘715 Patent a fourth time. Petitioners’ art and arguments
`
`are substantially the same as those the CRU rejected during the ’715 EPR.
`
`10
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`
`
`
`
`
`Date: July 15, 2024
`
`
`
`Respectfully submitted,
`
`/ Richard Giunta/
`Richard F. Giunta, Reg. No. 36,149
`WOLF, GREENFIELD & SACKS, P.C
`
`11
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`
`
`
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`I certify that on July 15, 2024, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via electronic mail,
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`as previously consented to by Petitioner, upon the following:
`
`kaiser-ptab@perkinscoie.com
`
`Jessica Kaiser
`Christina McCullough McCullough-ptab@perkinscoie.com
`Kyle Canavera
`
`Canavera-ptab@perkinscoie.com
`Tyler Knox
`
`Knox-ptab@perkinscoie.com.
`Andrew Ohlert
`
`AOhlert@perkinscoie.com
`James L. Day
`
`jday@fbm.com
`Daniel Callaway
`
`dcallaway@fbm.com
`James Heintz
`
`Jim.Heintz@us.dlapiper.com
`Raymond K. Chan
`Raymond.Chan@procopio.com
`Microsoft-LiTL-IPR@perkinscoie.com
`
`
`
`
`
`
`
`
`
`
`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`
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`
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`Date: July 15, 2024
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`
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